Academic journal article Santa Clara High Technology Law Journal

The Trademark Use Requirement in Dilution Cases

Academic journal article Santa Clara High Technology Law Journal

The Trademark Use Requirement in Dilution Cases

Article excerpt


The trademark use doctrine plays a critical role in ensuring that trademark law serves its proper purpose of encouraging market exchange and lowering consumer search costs. As we have explained in detail elsewhere, (1) the doctrine ensures that trademarks do not become a weapon used to suppress speech or to interfere with rather than promote the efficient operation of the marketplace.

These goals are even more important in the context of trademark dilution. Unlike a normal cause of action for trademark infringement, trademark dilution gives broader rights to a few famous mark owners to prevent even non-confusing uses in order to protect the uniqueness of their marks against blurring and tarnishment. But because trademark dilution can exist even when goods do not compete, and even absent any likelihood of confusion, it is even more critical that the universe of actions that can give rise to dilution be cabined by a clear and effective trademark use doctrine.

The Lanham Act has had a trademark use limitation on dilution since 1996, but recent amendments have changed the language and scope of that limitation, leading to some confusion about what is and is not protected. (2) In this article, we parse the language and legislative history of the 2006 Trademark Dilution Revision Act and explain why the trademark use requirement in the new statute not only survives but is more robust than before.


A. The Trademark Use Requirement

The trademark use doctrine requires, as an element of an infringement suit, that a defendant use a trademark "as a mark" to indicate the source or sponsorship of its products or services. (3) The requirement thus distinguishes between those who brand their products using the plaintiff's mark or some version thereof and others who use the plaintiff's trademark in some non-branding way--for example, by comparing, describing, critiquing, informing, presenting in proximity, learning, commenting, reporting, or simply poking fun. By maintaining the law's focus on misleading branding, the trademark use doctrine keeps trademark law true to its ultimate goal of promoting competitive markets. (4) While preventing uses that create confusion and misinformation, the law preserves uses that inform rather than deceive, that improve rather than harm the quality of information in markets. (5)

Although it has always informed trademark practice, (6) the formal trademark use doctrine has evolved in a non-linear and somewhat haphazard way in traditional trademark infringement litigation. Through case-by-case rulemaking, courts have recognized a variety of protected, non-branding uses of marks, and Congress has frequently codified the exemptions. (7) Descriptive fair use, nominative fair use, the protection for comparative advertising, parody, news reporting, commentary, and criticism have all emerged as categories of non-trademark use exempt from the reach of trademark holders. (8) More recently, courts have begun to invoke the trademark use doctrine to prevent actions against informational intermediaries, who use marks as indexing tools rather than in branding their products. (9) All of these "trademark use" exemptions share two features in common: "the defendant has used the mark in [some] ... non-source-identifying (and non-sponsorship-identifying) way; and ... the error costs from a pro-plaintiff verdict are high." (10) The trademark use doctrine thus serves as a buffer, protecting certain classes of behavior from liability without the uncertainties associated with the traditional "likelihood of confusion" test. (11)

B. Importance in Dilution Cases

In the dilution context, the need for a trademark use buffer is particularly acute. Unlike traditional trademark infringement--in which confusion over source or sponsorship lies at the heart of the claim (12)--dilution turns on murkier concepts of "blurring" and "tarnishment" that do not on their face depend on consumer perceptions as to the source of a defendant's product. …

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